Brief Summary: Board finding that prior art patent sharing inventor not overcome by uncorroborated inventor declaration affirmed. EmeraChem found not to have had sufficient notice and opportunity to be heard because “[f]or these…dependent claims, the Board never referenced anything other than Saito”.

Summary: EmeraChem appealed Board’s IPR decision that claims 1-14 and 16-20 of US 5,599,758 directed to methods for regenerating an engine catalyst would have been obvious in view of a combination of three references (“Campbell ‘558” (incorporated into the ‘758 patent and determined to be § 102(e) art (“described in a patent granted on an application for patent by another filed in the [US] before the invention thereof by the applicant”), “Saito” and “Stiles”). EmeraChem argued the ‘558 patent is not § 102(e) art and that “it did not have sufficient notice and opportunity to respond to Stiles as grounds for rejecting claims 3, 16 and 20.” The FC panel explained that it reviews the Board’s legal conclusions de novo (including whether a reference qualifies as prior art under § 103 (Riverwood, FC 2003) and compliance under the Administrative Procedures Act (APA) (Dell, FC 2016; In re NuVasive, FC 2016)) and its factual findings for substantial evidence (In re Gartside, FC 2000). Mr. Campbell is an inventor on both the ‘758 patent and the alleged § 102(e) reference Campbell ‘558. Under § 102(e), this opinion explains, “‘by another’ means that an application issued to the same inventive entity cannot qualify” and “[h]ere, the patents were issued to different groups of listed inventors” (each including Campbell). The question in this case was “whether the portions of the reference relied on as prior art, and the subject matter of the claims in question, represent the work of a common inventive entity.” Campbell’s declaration was found insufficient as uncorroborated by “any context, explanation, or evidence to lend credence to the inventor’s bare assertion” (not required in every case (Price, FC 1993 (uncorroborated testimony is treated with skepticism); In re Dubaun, CCPA 1982 (“does not stand for the proposition that declaration alone is always sufficient to support an inventor’s claim to inventorship”); In re Katz, CCPA 1982 (“more than a naked assertion by the inventor”); Knorr, CCPA 1982 (circumstantial evidence may suffice)). Thus, the Board’s findings that Campbell ‘558 is § 102(e) prior art and that claims 1-2, 4-14 and 17-19 would have been obvious were affirmed. The FC panel agreed with EmeraChem on the sufficient notice and opportunity to be heard issue regarding Stiles and claims 3, 16 and 20 because “[f]or these three dependent claims, the Board never referenced anything other than Saito” (“A general statement that lists all the challenged claims and all asserted prior art is not a separate, additional articulation that each of the claims may be obvious over any combination of all listed prior art.”) It distinguished Cuozzo (US 2016) since there “the institution decision gave the patentee notice of the prior art combination that the final decision relied upon” (see also Genzyme, FC 2016, in which “Genzyme had actual notice”; Novartis, FC 2017). The FC panel also noted it was not holding here “that the Board is constricted in its [FWD] to citing only portions of a reference cited in its Institution Decision.” Thus, this part of the Board’s decision was vacated and remanded.